Stricter approach to similarity in pharma trademark cases

The rules of comparison for pharmaceutical trademarks have long been stricter than those in other categories of products. The courts have frequently held that when pharmaceutical products are concerned, confusion may result in harmful consequences to the health of consumers. Therefore, a stricter approach has been applied in these cases. The case of Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd is the leading authority on judging the deceptive similarity of pharmaceutical trademarks.

Relying on the Cadila judgment, the Delhi High Court recently held that the mark Lulibet is deceptively similar to Labebet even though the marks were used on products designed to treat different ailments. In Sun Pharma Laboratories Limited v Bdr Pharmaceuticals International Pvt Ltd & Anr, the plaintiff applied for a permanent injunction to restrain the infringement and passing off of its trademark Labebet by the defendant’s adoption of the mark Lulibet. The plaintiff had used its mark Labebet since 2009 on a treatment for hypertension. The defendant was using its mark on an antifungal cream. The plaintiff claimed that the defendant’s mark was phonetically and structurally similar to its trademark. The plaintiff relied on the test of imperfect recollection and argued that when compared as a whole, there was the likelihood of one being confused with the other. The plaintiff submitted that confusing the competing products would lead to disastrous consequences.

The defendant argued that the prefixes in both the competing marks Labebet and Lulibet were structurally, phonetically, and visually different and represent the name of totally different drugs and molecules. The defendant also argued that the ways in which the products were administered were significantly different: Labebet was supplied in tablet form to be administered orally or supplied in injectable forms to be given intravenously. The defendant’s product Lulibet was supplied in cream, lotion or spray forms intended to be applied to the skin and was for external use only. The defendant also submitted that the plaintiff’s mark Labebet was not an invented mark, as it was derived from its active ingredient, Labetatol, and that “Labe” as a prefix had been used by other companies. The defendant argued that the plaintiff could not claim a monopoly over the common abbreviation and suffix -bet.

The court held that Lulibet is phonetically, visually and structurally similar to that of Labebet. The following are key points that should be considered when deciding cases of deceptive similarity involving pharmaceutical trademarks:

  • The marks have to be compared as a whole and they have to be judged by their look and sound;
  • The consumer base has also to be considered;
  • Where medicinal products are involved, the test to check the likelihood of confusion should be strictly applied. In the case of non-medicinal products, confusion only creates economic loss but, in the case of medicinal products, it may have adverse consequences on the health and life of the individual;
  • Though one drug may be sold in one form, such as tablets and injectables, and the other may be sold in such forms as a lotion and a cream, both drugs may be sold through common channels. Further, the similarity of the marks may give rise to possible deception or confusion.

The defendant also contended that the plaintiff was guilty of acquiescence and delay, as the defendant’s drug was launched in 2016 and the plaintiff had chosen to sit idly by for one and a half years. However, the court rejected this contention of the defendant and ruled that even if there was a delay on the part of the plaintiff in filing the lawsuit against the defendant, it was not sufficient to prevent the grant of an injunction in favour of the former.

The courts have consistently taken into consideration even the minute chances of confusion or deception associated with the use of deceptively similar marks on pharmaceutical products. They have regularly relied on the principle of judging deceptive similarity from the perspective of a consumer of average intelligence and imperfect recollection. The reliance on human memory has been given little regard in pharmaceutical trademark cases, as even a little doubt on the part of a consumer could result in a fatality. This approach would appear to be the right one, especially when considering the wellbeing of consumers. Pharmaceutical brand owners therefore need to conduct thorough searches both in the records of the Trademarks Registry and in physical markets before adopting a trademark, in order to avoid any conflict.

Article by Omesh Puri and Ruchi Sarin.

1st published in India Business Law Journal.